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EU addresses orphan works and 'out-of-commerce' books and journals

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A new European agreement is tackling the challenge of how to revive books and journals that predate the internet without damaging the rights of authors and publishers, write Carlo Scollo Lavizzari and André Myburgh, attorneys-at-law at Lenz Caemmerer

On 12 September, the Authors Guild in the USA, along with Australian and Canadian author representatives and others, sued the partnership of five US universities who are engaged in a so-called “Orphan Works Project”, a derivative of Google’s Library Project and bid to gain a first-mover advantage in the digital frontier.

Part of the controversy is the following vexing question: how to define under what circumstances pre-internet (but in-copyright) works can be revived digitally, by whom and in what countries (territories).

Courts are, of course, primarily there to interpret copyright law and not to make it, or to decide societal questions involving an evaluation of a range of public and private interests.

Europe, it would appear, is trying to resolve these questions without engaging the court system. On 20 September, Commissioner Barnier presided over the signature of a Memorandum of Understanding (MoU) on principles to digitise and make available so-called “out-of-commerce” books within the 27 member states of the European Union.

STM’s chief executive Michael Mabe called this event ‘a milestone in co-operation for the publishing and library sector’. The MoU complements draft legislation introduced earlier on orphan works, which some might describe as the other “problem child” of today’s copyright world.  Certainly, the stakeholder dialogue in the EU leading to the MoU has shown that the problem of obtaining permission to digitise and make available books and journals that are out of print – now called “out-of-commerce” in the electronic age – and books of which the authors are unknown or cannot be traced – so-called “orphan works” – have vexed libraries and publishers for years.

To some extent, the issue is a consequence of the Berne Convention, the main treaty on copyright, which abolishes the need to register and renew copyrights. It is perhaps accentuated further by the term extension to 70 years after the death of the author – and sometimes beyond. Added to this, comes the ubiquity of the internet versus the territorial nature of the copyright system. So, how does the MoU attempt to deal with these constraints and enable a digital after-life of past works?

Whilst ground-breaking, the MoU is also modest: it is limited to sectors at the table and applies to books and journals that were first published in a European Union country.  A book (or journal) is defined as being “out of commerce” “when the whole work, in all its versions and manifestations is no longer commercially available in customary channels of commerce, regardless of the existence of tangible copies of the work in libraries and among the public (including through second-hand or antiquarian bookshops).

Where a book or journal is out-of-commerce, parties are meant to enter into collective negotiated licenses that may also cover rightsholders who are not immediately at the table or represented, but who were all given the opportunity to have their say. Even where they do not do so these parties are protected by a series of safeguards spelt out in the MoU. These include: the right of authors and publishers to revive the book or journal exclusively themselves; a right of opt-out from any access projects at all times; a general duty of collective management organisations to contact their rightsholders, coupled with a specific obligation to do so if the work’s demand for a digital second life exceeds expectations. Finally, specific procedures should be considered to reach rightsholders whose works are used “frequently or intensively” across borders under a collective licensing scheme. The MoU does not attempt to set the trigger for these events, thresholds, or to determine the time line for due diligence and procedures. Rather, the MoU calls for these factors to be negotiated at the national level in EU member states, by those stakeholders who are best-placed to make a sound judgment call on the issues affecting their national literature and cultural heritage.

The MoU presents an opportunity to revive as many books and journals as possible that predate the internet, but without interfering with the legitimate rights and expectations of the authors and publishers whose creativity, energy, time and investment brought these works to life in the first place.

The MoU could also be likened to a compulsory patent licence where the patentee, without sufficient reason, does not work his invention and does not license anyone else to do so.  Unlike patent law, the MoU confirms the author’s absolute right to deny the public his work in digital format, but only as a result of a conscious decision, not by oversight, processes going wrong or mere neglect. It also ensures that any such decision remains constantly reviewable until expiry of any copyright term remaining.

Carlo Scollo Lavizzari is a partner and André Myburgh is Foreign Counsel (South Africa and England, non-practising) of Lenz Caemmerer, Attorneys-at-Law in Basel, Switzerland. They are the Counsel for STM, the International Association of Scientific, Technical and Medical Publishers, and represented STM in the negotiation of the Memorandum of Understanding